U.S. DOD Form dod-secnavinst-5870-3c
DEPARTMENT
OF THE NAVY
Office of the Secretary
DC 20350-1000
Washington,
SECNAV
INSTRUCTION
5870. 3C
From:
To:
Secretary of the Navy
All Ships and Stations
Sub: INVENTIONS
MADE BY DEPARTMENT OF THE NAVY PERSONNEL
1, Purpose. To state the Department
of the
Navy (DON) policy for the implementation
of
Executive Orders 10096 and 10930 and 15
United States Code 3710d. This is a complete
revision of SECNAVINST
5870. 3B and should
be read in its entirety.
2. Cancellation.
ONR 5870-2.
SECNAVINST
5870.3B
and
3. Executive Orders 10096 and 10930. Ex­
ecutive Order 10096 established a uniform
patent policy with respect to inventions made by
any Government
employee. The Government
may, under certain conditions,
obtain the entire
right, title and interest to an invention made by
its employee. Provision is made for the retention
of certain rights by the employee under other
conditions.
Determination
by a Government
agency that the Government
has, or is to take
less than the entire right, title, and interest to
an invention is subject to approval by the Com­
missioner of Patents and Trademarks
(Commissioner)
under authority delegated under
Executive Order 1093O.
4. Title 1S United States Code .3710d. This
statute provides that if an agency which has the
right of ownership to an invention under the
Federal Technology Transfer Act of 1986, Pub­
lic Law 99-502, does not intend to file for a
patent application or otherwise promote com­
mercialization
of the invention, the agency shall
allow the inventor, if the inventor is a Gover­
nment employee or former employee who made
the invention during the course of employment
with the Government,
to retain title to the in­
vention. A nonexclusive,
nontransferable,
irrevocable,
paid-up license is reserved by the
Government.
5, Implementing
Regulations.
Regulations
under Executive Order 10096 issued by the
Commissioner
(Title 37, Parts 100 and 101,
Code of Federal Regulations) set forth the re­
sponsibilities of Government
agencies. Agency
SECNAWNST
5870.3C
OCNR: 00CCIP
25 February 1988
responsibilities,
among others, include the deter­
mination of invention, the determination
of
rights in inventions, the determination
of
whether patent protection will be sought in the
United States and foreign countries, and the
furnishing of certain reports. Each Government
agency is required to effectuate the order, in­
cluding the issuance of necessary regulations
which shall not be inconsistent with regulations
issued by the Commissioner.
6.
out
the
ble
will
Department
Responsibilities.
In carrying
these agency responsibilities
for the DON,
Chief of Naval Research (CNR) is responsi­
for and, through authorized
representatives,
discharge the following functions:
a. Determine whether the results of re­
search, development,
or other activity within the
DON constitute invention within the purview of
Executive Order 10096.
b. Determine,
subject to review by the
Commissioner,
the rights of the inventor and of
the Government,
respectively, in and to any in­
vention made by a Department
of the Navy
employee .
c. Determine,
subject to certain exceptions
noted hereinafter,
whether protection by patent,
statutory invention registration
(SIR), or publica­
tion will be sought in the United States and
foreign countries by the DON for such inven­
tions.
d. Furnish the Commissioner
with required
reports on the determination
of rights.
7. Conditions for Assignment.
The DON may
require assignment of tide to inventions made by
employees of the DON and to any patents that
may be issued on such inventions if any of the
following conditions are present:
a. If the invention
ing hours.
was made
during
work­
b. If the invention was made with a Gov­
ernment contribution
of facilities, equipment,
materials, funds, or information,
or with the
time or services of other Government
employees
on official duty.
c. If the invention bears a direct relation
to or was made in consequence
of the official
duties of the inventor.
SECNAVINST
5870.3C
25 February 1988
to law. If the employee is unable to establish
the absence of all of the conditions of paragraph
7, he or she may nevertheless
establish that the
conditions which are present are insufficient
equitably to justify a requirement
that assign­
ment be made to the Government,
in which
event the Government
will be entitled to a non­
exclusive, irrevocable,
royalty-free
license in the
invention and any patent which may issue
thereon with power to grant licenses for all gov­
ernmental purposes.
8. When Assignment
is Required. When any
of the conditions set forth in paragraph 7 are
present, the domestic rights and, at the CNR’S
discretion, the foreign rights in and to the in­
vention, shall belong to the Government
unless:
a. The conditions are equitably insufficient
to justify assignment thereof by the employee to
the Government.
b. The Government
has insufficient interest
in the invention to require assignment thereof by
the employee.
11. Presumption
that License is Required.
If
an employee is not within any of the classes de­
fined in paragraph 9, a presumption
arises that
the Government
is entitled to a non-exclusive,
irrevocable,
royalty-free
license in the invention
and any patents which may issue thereon with
power to grant licenses for all governmental
pur­
poses. Either the Government
or the employee
may, however, rebut this presumption.
If the
Government
establishes that the presence of
the conditions of paragraph 7 are sufficient
equitably to require an assignment to the Gov­
ernment rather than a license, such assignment
shall be required.
If the employee establishes
the absence of all of the conditions of paragraph
7, no license will be required and the entire
right, title, and interest in and to the invention
shall be left in the employee, subject to law.
If it should be found that assignment is not re­
quired under (a) or (b) of this paragraph,
the
employee nevertheless
shall be required to grant
to the Government
a nonexclusive,
irrevocable,
royalty-free
license in the invention and under
any patents which may issue thereon, with
power to grant licenses for all governmental
pur­
pose. When none of the conditions set forth in
paragraph
7 are present, the entire right, title,
and interest in and to the invention shall be left
in the employee, subject to law.
9. Presumptions.
Executive Order 10096 re­
quires certain presumptions
dependent
on
whether or not the employee is employed or
assigned:
a. To invent or improve or perfect any art,
machine, manufacture,
design, or composition
of matter.
b.
opment
To conduct or perform
work, or both.
research,
devel­
c. To supervise, direct, coordinate,
view Government-financed
or conducted
research, development
work or both.
or re­
In the
12. Review of Agency Determination.
event that the CNR determines,
under para­
graph 8, that the domestic rights in and LOan
invention will be left with an employee with or
without a license in favor of the Government,
a
statement of this determination
must be submit­
ted to the Commissioner
for review.
d. To act in a liaison capacity among gov­
ernmental or nongovernmental
agencies or
individuals engaged in such research or develop­
ment work.
The decision of the Commissioner
respecting the
matter shall be final, subject to the right of the
employee or the CNR to submit to the Commis­
sioner within 30 days (or such longer period as
the Commissioner
may, for good cause, fix in
any case) after receiving notice of such decision,
a petition for the reconsideration
of the deci­
sion. A copy of the petition must also be filed
by the employee with the ChTR within the pre­
scribed period.
10. Presumption
that Assignment
is Required.
[f an employee is within any of the classes set
forth in paragraph
9, a presumption
arises that
the Government
is entitled to an assignment of
the invention and any patents which may issue
thereon. The employee may, however, rebut this
presumption
by establishing the absence of all of
the conditions of paragraph 7, in which event
the entire right, title, and interest in and to the
invention shall be left in the employee, subject
2
SECNAVINST
5870.3C
25 February 1988
invention
13. Appeals, Any employee of the DON who is
aggrieved by a determination
of the CNR under
paragraph
8 may obtain a review of the determi­
nation by filing, within 30 days (or such longer
period as the Commissioner
may, for good
cause, fix in any case) after receiving notice of
such determination,
a written appeal, in dupli­
cate, with the Commissioner.
The Commissioner
will forward one copy of the appeal to the CNR.
14. Appeal Information.
In the event of the
filing of an appeal, the CNR, subject to consid­
erations of national security, shall furnish the
Commissioner,
in writing, promptly upon filing
of the appeal, the information
required by 37
C.F. R. 100.7(b). The decision of the Commis­
sioner upon any appeal taken under paragraph
13 shall be final unless a request for reconsid­
eration or modification
of the decision is filed
within 30 days (or within such time as set by
the Commissioner).
throughout
the world by or
18. Dispute as to Rights. A controversy
over
the respective rights of the Government
and of
the inventor in an invention shall not delay the
taking of any action seeking patent protection.
When there is a dispute as to whether the Gov­
ernment is to obtain an assignment of the
domestic rights in and to the invention or only a
license thereunder,
the CNR, through authorized
representatives,
will determine whether patent
protection will be sought in the United States
pending the Commissioner’s
decision on the dis­
pute. If an application for patent should be
filed, license rights specified in 37 C.F. R.
100.6(b) (2) will be obtained, but this shall be
without prejudice to acquiring an assignment of
the domestic rights in and to the invention
specified in 37 C.F. R. 100.6(b) (1) should the
Commissioner
so decide.
15. Right to Private Counsel. Attorneys of the
DON represent the Government
in proceedings
under this instruction.
Any employee of the
DON has a right to private counsel at the em­
ployee’s own expense in connection with any
determination
of the Government’s
rights to an
invention made by the employee.
16. Foreign Rights. Whenever an
the domestic rights is required, an
Government to acquire the foreign
to the invention shall be obtained
ployee.
practiced
on behalf of the Government).
The employee
will be advised of the right to retain title and
the employee’s right to retain title to the inven­
tion will be conditioned
upon the employee
timely filing a patent application in cases where
the Navy has or may have need to practice the
invention. In cases under paragraph
8, when it
is determined
that the domestic rights in and to
the invention are to be left with the employee,
action by the DON looking toward patent pro­
tection shall be contingent upon the consent of
the inventor to grant a royalty-free
license to
the Government,
A signed waiver of the em­
ployee’s (or former employee’s)
right to retain
title to the invention will be secured before SIR
or publication protection is obtained.
assignment of
option for the
rights in and
from the em­
17. Invention Protection.
The CNR, through
authorized representatives,
upon determining
that an invention was made under the condi­
tions specified in paragraph 7, shall determine
whether protection.
by patent, SIR, or publica­
tion will be sought in the United States by the
DON for such invention. If it is determined
that
an invention was made under the conditions
specified in paragraph 7 and the Government
has the right of ownership to the invention but
the Navy does not intend to file an application
or patent or otherwise to promote commerciali­
zation of such invention, the inventor will be
allowed to retain title to the invention (subject
to the reservation by the Government
of a non­
exclusive, nontransferable,
irrevocable,
paid-up
license to practice the invention or have the
19. Rights in the Employee.
When the CNR
has determined
to leave the domestic rights in
and to an invention with an employee subject to
a license in favor of the Government,
and the
employee acquiesces in this determination,
then
the CNR will, upon the filing of an application
for patent and pending review of the determina­
tion by the Commissioner,
take such license
rights as are specified in 37 C.F. R. 100.6(b) (2)
without prejudice to the subsequent
acquisition
by the Government
of the domestic rights in
and to the invention specified in 37 C, F.R.
100. 6(b) (1) should the Commissioner
so decide.
3
SECNAVINST
5870.3C
25 February
1988
20. Disclosure of Inventions tind Submission
of Patent Rights Questionnaire.
In order that
the DON can comply with the rules and regula­
tions issued as Title 37, Parts 100 and 101,
Code of Federal Regulations, all employees shall
submit to their local Navy Office of Counsel a
disclosure of each invention made by them
while an employee of the Navy and information
regarding the making of the invention.
NAVONR 5870/35, Record and Disclosure of
Invention, should be used for reporting inven­
tions. NAVONR 5870/3, Patent Rights
Questionnaire, should be used to submit the
information
on the making of the invention,
21. Employee
Defined.
The term
“employee”
as used herein means any officer or employee,
civilian or military, of the Department
of the
Navy, including any part-time
consultant or
part-time
employee, except as may otherwise be
provided in special circumstances
with the ap­
proval of the Commissioner.
22. Invention
Defined.
The term
“invention”
as used herein means any art, machine, manu­
facture, design, process, or composition
of
matter, or any new and useful improvement
thereof, or any variety of ,plant, which is or may
be patentable under the patent laws of the
United States.
a, The reporting requirement
contained in
paragraph 20 of this instruction is exempt from
reports control by OPNAVINST
5214.7.
b. NAVONR 5870/35, Record and Dis­
closure of Invention, and NAVONR 5870/3,
Patent Rights Questionnaire,
are stocked and
distributed by the Office of the Chief of Naval
Research (Code 00 CCA), 800 North Quincy
Street, Arlington, VA 22217-5000.
H. LAWRENCE GARRETT, III
Acting Secretary of the Navy
Distribution:
SNDL Parts 1 and 2
MARCORPS
Code H and I
Commander
Naval Data Automation
Command
(Code 813) Washington Navy Yard
Washington,
DC 20374-1662
(20 copies)
Stocked:
Co, NAVPUBFORMCEN
5801 Tabor Ave.
Philadelphia,
PA 19120-5099
(500 copies)